2025 ATMO 150

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 58, 59 and 62A - s 58 established for a subset of goods - no other ground established - registration refused

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Ting SONG ('Opponent') to registration of the following trade mark:

Class 16: Painting templates; Scribbling pads; Crayons; Writing or drawing books; Works of art (paintings); Scrapbooks; Drawing boards; Desk mats; Felt pens; Greeting cards; Loose-leaf binders; Pencil cases; Photograph albums; Shelf paper; Sketch books; Blackboards; Artists' sketch books; Note books ('Applicant's Goods')

1. The Trade Mark was examined and advertised as accepted for possible registration on 5 May 2024.
2. On 6 May 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 10 May 2024, the Opponent filed a Statement of Grounds and Particulars ('SGP'). The Applicant filed a Notice of Intention to Defend the opposition on 15 July 2024.
3. The Opponent filed Evidence in Support ('EIS') on 10 October 2024. The Applicant did not file Evidence in Answer.
4. The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I have decided this matter based on the particulars set out in the SGP and the evidence of the Opponent.

1. The SGP nominates grounds of opposition under ss. 58, 59 and 62A.
2. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

Part 1-3

Supplementary Declaration of Ting SONG[5]

Part 1-3

1. Song consists primarily of screenshots from Amazon at www.amazon.com.au ('Amazon') dated after the Relevant Date as follows:
   • screenshots dated 5 September 2024 and 29 September 2024 reference the sale of drawing books which are described as '3D Printing Drawing Book, Reusable Colorful 40 Patterns Thick Paper Template with a Clear Plate, Painting Graffiti Template for 3D Pen Kids DIY Gift' and contain 'a printing drawing book (20 pages, 40 patterns) and a plastic plate' ('Opponent's Drawing Books').[6] The Opponent's Drawing Books are not traditional drawing books namely sketchbooks typically containing blank pages made of paper suitable for drawing with various media. The screenshots make reference to the manufacturer and brand as SONGTIY and show use of the trade mark . In the 5 September 2024 screenshots under the heading 'Additional Information' it states 'Date First Available 13 January 2022' and beneath the screenshots are four reviews from Amazon 'verified purchasers' in Australia for the Opponent's Drawing Books dated before the Relevant Date;
   • screenshot dated 5 September 2024 of the SONGTIY store showing other products for sale under the SONGTIY brand unrelated to Opponent's Drawing Books; and
   • screenshot dated 5 September 2024 provides a sales summary of SONGTIY branded products for the last 90 days, which would be the period 7 June 2024 to 5 September 2024.
2. Song provides details of a United Kingdom and a European Union registration for the Trade Mark in the name of the Opponent filed before the Relevant Date.

Section 58**

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
2. The right to registration under the Act depends upon ownership of the trade mark and not ownership by registration[7] and this requirement must be satisfied at the filing date of the application.[8] Ownership of a trade mark may be established 'either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use'.[9] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[10]
3. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:

[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant's claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[11]

1. The default position under the Act is that the Applicant is prima facie considered to be the owner of the Trade Mark. Consequently, it is the Opponent who bears the evidential onus of establishing that the Applicant was not the owner of the Trade Mark at the Relevant Date. To achieve this, the following requirements must be satisfied:
   • the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark [12] ('First Requirement');
   • the goods claimed by the Trade Mark are the 'same kind of thing' as the goods for which the trade mark relied upon by the Opponent has been used[13] ('Second Requirement'); and
   • a person other than the Applicant has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any actual use of the Trade Mark[14] ('Third Requirement').
2. In summary, the SGP states that the Opponent created the trade mark SONGTIY from the homophonic pronunciation of the Opponent's name in 2018 and since 13 January 2022, has been selling the Opponent's Drawing Books and related products through Amazon to Australian consumers under the trade mark SONGTIY. Further, the Opponent has registered the trade mark SONGTIY in the United Kingdom and European Union. The SGP therefore claims first use of the Trade Mark by the Opponent in Australia in respect of the Opponent's Drawing Books on 13 January 2022 and continuous use since this date.
3. There are numerous deficiencies in the Opponent's evidence as much of it is dated after the Relevant Date. To this end, I note my comments on the deficiencies of Song in my summary of the evidence at [9] and [10] of this decision. The only evidence in Song which shows use of the Trade Mark in respect of the Opponent's Drawing Books are the screenshots from Amazon dated after the Relevant Date which do not refer to the Opponent but rather, refer to the seller SONGTIY and the store as SONGTIY. There is no explanation as to what, if any, relationship the Opponent has with the SONGTIY store. However, the purpose of the s 58 ground is to determine whether or not the Applicant is the owner of the Trade Mark. While the Opponent's evidence has failed to satisfy me that the Opponent was the owner of the Trade Mark in Australia in relation to the Applicant's Goods, I am satisfied that the screenshots from Amazon show use of the Trade Mark in respect of the Opponent's Drawing Books and while dated after the Relevant Date, the reviews from Amazon 'verified purchasers' from Australia are all dated before the Relevant Date and appear to directly review the Opponent's Drawing Books in the screenshots. Further there is reference to the 'Date First Available' in the 5 September 2024 screenshots as 13 January 2022. This evidence shows use of the Trade Mark in Australia in respect of the Opponent's Drawing Books prior to the Relevant Date by a person other than the Applicant.
4. As the ground of opposition in s 58 can be established by showing that the Applicant is not the owner and while the burden of proof is on the Opponent, here, I find the evidence sufficient to enable a finding of fact to be made about ownership of the Trade Mark at the time of filing in respect of the Opponent's Drawing Books. On the evidence before me I am satisfied that a person other than the Applicant first used the Trade Mark in Australia in respect of the Opponent's Drawing Books.
5. The Applicant's Goods however claim more than just the drawing books. Given the Opponent's Drawing Books are not traditional drawing books and contain paper templates and a clear plate, I consider that the Applicant's 'drawing books' and 'painting templates' are the same kind of thing as the Opponent's Drawing Books. I do not however consider that 'scribbling pads, crayons, writing books, works of art (paintings), scrapbooks, drawing boards, desk mats, felt pens, greeting cards, loose-leaf binders, pencil cases, photograph albums, shelf paper, sketch books, blackboards, artists' sketch books or note books' ('Subset Goods') are the same kind of thing as the Opponent's Drawing Books.
6. The meaning of 'same kind of thing' was considered by Finkelstein J at first instance in Colorado Group Limited v Strandbags Group Pty Limited where he stated:[15]

It follows that proprietorship by first use is proprietorship in relation to the goods or classes of goods on which the mark has been used. The proprietor is entitled to have his mark registered in respect of those goods. This entitlement is not confined to identical goods or classes of goods. Registration may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" (Jackson & Co v Napper [1887] UKLawRpCh 91; (1886) 35 Ch D 160, 178) or "like articles of production" (Columbia Mill Company v Alcorn, [1893] USSC 246; 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" (Colman v Crump, 70 NY 573, 578 (1877)) or "kindred articles" (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)), if there be any difference between these expressions. See also Edwards v Dennis [1885] UKLawRpCh 226; (1885) 30 Ch D 454.

1. Justice Allsop repeated these authorities in Colorado Group Limited v Strandbags Group Pty Limited[16] and further stated:

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes ... This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming H B, Sebastian's Law of Trade Marks, 4th Ed at p 91) or "goods essentially the same ... though they pass under a different name owing to slight variations in shape and size.[17]

Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name.[18]

1. In my view, the Subset Goods are not essentially or substantially the same as, nor a true equivalent to, nor a like article of production nor a kindred article to the Opponent's Drawing Books. While all the Subset Goods can be used by the same consumer as the Opponent's Drawing Books, the Subset Goods cannot be used as a substitute for the Opponent's Drawing Books.
2. In conclusion, I find that the second requirement succeeds in respect of 'drawing books and painting templates' ('Conflicting Goods') but not in respect of the Subset Goods. As a consequence, the s 58 ground is successful for the Conflicting Goods.
3. I will now consider the remaining grounds with respect to the Subset Goods.

Section 62A

1. Section 62A provides:

The registration of a trade mark may be opposed on the ground that the application was made in bad faith

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
   • persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
   • persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
   • persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
2. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J made the following comments, quoting from Harrison's Trade Mark Application:[19]

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton 'the Robin Hood test'. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

... The words 'bad faith' suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[20]

1. Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant's mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[21]

1. In DC Comics v Cheqout Pty Ltd,[22] Bennett J noted that

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person's behaviour fell short of acceptable commercial standards.

1. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[23]
2. In summary, the SGP provides that:
   • the Applicant did not notify the Opponent before filing the Application;
   • the Opponent has received a negative inquiry from Amazon regarding ownership of the Trade Mark in Australia;
   • the Applicant seeks to stop the Opponent using the Trade Mark or conducting business in Australia by obtaining a registration; and
   • the Application is not a bona fide application as the Applicant filed the Application to attack business competitors.
3. There is no evidence from the Opponent that the Applicant seeks to stop the Opponent using the Trade Mark or conducting business in Australia by obtaining a registration, nor that the Application was filed to attack business competitors. Further there is no evidence that the Applicant was required to notify the Opponent before filing the Application and nor is there any evidence that the Opponent received a negative inquiry from Amazon.
4. I do not agree that the Application was made in bad faith. There is no evidence to support such a contention and in particular no evidence that the Applicant had any awareness of the Opponent's use of the Trade Mark on Amazon at the time of filing. Even if I were to accept that the Applicant was aware, this alone does not provide a sufficient basis to conclude that the Application was made in bad faith. Awareness or mere knowledge before the Relevant Date of another person's trade mark, without more, does not in itself constitute a basis for a finding of bad faith'.[24]
5. In conclusion, the Opponent has not provided any compelling evidence that the Applicant's filing of the Trade Mark in connection with the Subset Goods was 'unscrupulous, underhand or unconscientious'. As a consequence, the Opponent has not established the ground of opposition under s 62A in respect of the Subset Goods.

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

1. In summary, the SGP repeats the claims under the s 62A ground adding that the Application was filed with no intention to use the Trade Mark.
2. Under s 27, an intention to use or authorise use of a trade mark in Australia is a prerequisite to a valid application for registration.
3. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[25] In Aston v Harlee Manufacturing Co, Fullagar J stated:

I do not regard his Honour [Dixon J in Shell Co] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.[26]

1. The presumption arising from filing may be challenged by evidence from the opponent that establishes the contrary, thereby shifting the onus from the opponent onto the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.
2. The intention must be 'a resolve or settled purpose' and immediate use is not required.[27] In Ritz Hotel Ltd v Charles of Ritz Ltd and Another, McClelland J said:

[i]n my opinion the correct view is that an unused mark is not "proposed to be used" by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time.[28]

1. Lack of intention cannot be inferred from lack of use per se. In Suyen Corp v Americana International Ltd, Dodds-Streeton J stated:

There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[29]

1. A mere assertion of lack of intention to use does not require a response from the applicant. Further as Hearing Officer Homann said in Intel Corporation v Magnatex International Pty Ltd:

No evidence as to these matters was led by the applicant. At the same time I must also say that there was no obligation on the applicant to do so. Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention.[30]

1. An opponent need only make out a prima facie case to shift the burden to an applicant to demonstrate intention to use. I consider that this prima facie case should be sufficiently strong and established by sufficient evidence for the applicant to be called on to answer it.
2. The first question for consideration is whether the Opponent has satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicant. While the SGP states that the Applicant filed the Application to attack business competitors and the Application was filed with no intention to use the Trade Mark, there is no evidence to support these contentions. Therefore, for the Subset Goods, I am not satisfied that the Opponent has established a prima facie case of lack of intention to use by the Applicant so as to shift the burden to the Applicant to demonstrate intention to use. The Opponent has not provided any documents or credible circumstances to indicate an intention which is not sufficiently definite, resolved or settled or not directed at use as a trade mark in respect of the Subset Goods. The Opponent has consequently failed to establish the ground of opposition in respect of the Subset Goods pursuant to s 59.

1. The Opponent has established a ground of opposition under s 58 in respect of the Conflicting Goods.
2. In Apple Inc v Registrar of Trade Marks Yates J stated that:

My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[31]

1. In circumstances where an opposition has been established in respect of some, but not all of an applicant's goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[32]

1. The Opponent has not filed submissions and the Applicant has not participated in the opposition other than filing a Notice of Intention to Defend. Thus, neither party has raised the possibility of an amendment nor identified a principled basis to allow an amendment of the Trade Mark to limit it to a particular subset of the Applicant's Goods. In these circumstances, I find there is nothing to compel me to offer the Applicant the opportunity to limit the Applicant's Goods. As such, I do not consider it appropriate to exercise my discretion and offer an amendment in respect of the Trade Mark and I reject the Application for possible registration in its entirety.
   1. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court's direction or order.

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act')and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) ('Southern Cross').